The Complainant is Carrefour, France, represented by Dreyfus & associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 30, 2019. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2019. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 4, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the French retail company Carrefour, which operates in more than 30 countries, and also offers its customers financing, savings and insurance solutions. The Complainant owns numerous trademark registrations in different countries, such as the French trademarks BANQUE CARREFOUR and CARREFOUR, respectively Nos. 3585968 (registered on July 2, 2008) and 1487274 (registered on September 2, 1988); the European Union Trade Mark CARREFOUR No. 005178371 (registered on August 30, 2007); and the International trademark CARREFOUR No. 353849, protected in, inter alia, Benelux; Czech Republic; Estonia; Hungary; Lithuania; Montenegro; Morocco; Serbia; Slovakia and Slovenia (registered on February 28, 1969). In addition, the Complainant also owns several domain names reflecting its trademarks CARREFOUR or BANQUE CARREFOUR, including The Respondent registered the disputed domain name The Panel accessed the disputed domain name on November 17, 2019, and it resolved to a pay-per-click (“PPC”) parking page containing a search bar. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is confusingly similar to the Complainant’s trademarks CARREFOUR and BANQUE CARREFOUR. The Complainant and its trademark CARREFOUR enjoy a worldwide reputation. The Complainant’s trademark CARREFOUR has been considered to be well-known or famous by numerous previous UDRP panels. The disputed domain name reproduces the Complainant’s trademark CARREFOUR and associates it with the French generic term “banque”, meaning “bank” in English, intersected by a hyphen. The disputed domain name also reproduces the Complainant’s trademark BANQUE CARREFOUR by merely inversing its sequence. Finally, the extension “.name” is not to be taken into consideration when examining the identity or confusingly similarity between the Complainant’s trademark and the disputed domain name as it is viewed as a standard registration requirement. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the CARREFOUR trademark precedes the registration of the disputed domain name by many years. The Respondent is not commonly known by the disputed domain name or by the name “carrefour” or “banque carrefour”. The Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpages to which the disputed domain name was pointing have changed several times. Initially, the domain name resolved towards a parking page with different commercial links. Then, it started resolving to a webpage featuring a search engine. Email servers had also been configured on the disputed domain name and thus, there was a risk that the Respondent was engaged in a phishing scheme. So, the disputed domain name is not used in any type of legitimate business or service. Furthermore, previous UDRP panels found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain names could reasonably be claimed. Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s trademarks, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. - The disputed domain name was registered and is being used in bad faith. Bad faith can be found where a respondent knew or should have known of the complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Firstly, the Complainant is well-known throughout the world. Secondly, the composition of the disputed domain name imitating the Complainant’s trademarks, and which are related to the Complainant’s activities (i.e. the banking and financial services), strongly suggest that the Respondent has the Complainant’s trademark and activities in mind when registering the disputed domain name. Thirdly, the Complainant’s CARREFOUR trademark registration significantly predates the registration date of the disputed domain name. Given the Complainant’s goodwill and renown, and the nature of the disputed domain name, the Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of the Complainant’s goodwill and reputation, which clearly constitutes bad faith. Also, by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent has used the disputed domain name to direct Internet users to a webpage displaying PPC links which are likely to generate revenues. Previous UDRP panels have held that the use of domain names to divert Internet users, and to direct them to a webpage providing revenues to a respondent through clicks, evidences bad faith. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. Also, all aforementioned circumstances confirm that the disputed domain name is used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel has no doubt that “carrefour” is a term directly connected with the Complainant’s trademarks. Annex 5 to the Complaint shows numerous trademark registrations for CARREFOUR and BANQUE CARREFOUR. The disputed domain name differs from the Complainant’s trademark CARREFOUR by the addition of a hyphen symbol and the French dictionary word “banque” (which corresponds to “bank” in English). The disputed domain name differs from the Complainant’s trademark BANQUE CARREFOUR by the inversion of the order of the words “banque” and “carrefour” and by the inclusion of a hyphen symbol between these words (”carrefour-banque” instead of “banque carrefour”). The disputed domain name also presents the generic Top-Level Domain (“gTLD”) extension “.name”. Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive/geographical terms (such as “banque”) to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927). It is also already well established that the addition of a gTLD extension such as “.name” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is linked to a PPC advertising scheme, potentially generating revenues to the Respondent. The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why it has chosen the specific term “carrefour-banque” to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent (in April 2019), the trademark CARREFOUR was already well-known and directly connected to the Complainant’s retail services. The Panel emphasizes that besides the Complainant’s notorious retail activities, it offers its customers financing, savings and insurance solutions. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “carrefour-banque” could be a mere coincidence. Furthermore, the Respondent’s use of the disputed domain name in connection with a PPC scheme may have potentially generated revenues and enhanced the likelihood of confusion with the Complainant’s trademark. Previous UDRP decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. Finally, the passive posture of the Respondent, not at least providing justifications for the use of a well-known, third party trademark, certainly cannot be used in benefit of the Respondent in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Rodrigo Azevedo
Sole Panelist
Date: November 20, 2019
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